Israel Patent Office Report 2013 now available in English

September 29, 2014

israel-patent-report-2013

The Israel Patent Office has published an English version of its Annual report for 2013 which is available for review here.

The report presents the main activities of the ILPO during 2013 in the fields of Patents, PCT, Designs and Trademarks through quantitative data and statistics. The reports also shows Israel’s international profile in the different fields of intellectual property registration.

I wrote up a summary of the report or rather what trends could be culled from it after the Hebrew version published. My report is here.

I suppose the publication of the English version of the report warrants some additional comment, so I will discuss the graphics! The main image is an origami vehicle suspended beneath a hot air balloon. We assume that this is not meant to indicate a lot of hot air and a waste of paper. We are, however, not sure what it is supposed to  indicate. Suggestions, as always, are welcome!


Patents of Jewish Year 5775

September 28, 2014

pomegranate deseeder

As we enter a Jewish New Year, Israeli newspapers and television programs look back over the year that was, and make predictions about the coming 12 months. As an IP blogger, I should presumably do the same.

Patentable inventions sometimes represent major changes in direction and new product lines. I wrote a couple of patent applications 10 years ago that were examined in multiple classes and sailed through. They are now routinely cited against the same applicant’s newer applications. Those types of patent applications are rare.

There is another class that I call the hardy perennials. Some years ago these were whistle activated beepers attached to spectacle cases that are now generally RFID codes connected to an App on a smart phone.

Then there are the trends. As we enter a new Jewish Year, I look back over the past twelve months and note that in Israel last year was the year of the alarm system for detecting a baby left in a vehicle. This sometimes took the form of an RFID App tattooed to the baby’s rear end to alert the parent that their offspring was left in the car. Other technologies were suggested. Despite the fact that I usually managed to avoid taking on these entrepreneurial philanthropic inventors as clients, confidentiality prevents me from recording the range of disparate solutions I learned this past year.

My problem is remembering not to leave the smart phone in the car. I never forgot the kids. The obvious solution is to attach a baby to one’s smart phone, but I digress.

All indications show that the coming year will include a range of wacky processes for detecting under-ground tunnels. The problem will be in enforcing the ideas against the Israel Defense Forces. Not only are there obvious grounds for the Ministry of Defense to issue compulsory license, but how will we know which technology is used to detect these passages?

I suppose one of the attractions of this profession is that we never know what the next entrepreneur who comes through our door will take out of the shoe-box. There is always something novel, or at least non-obvious, or arguably useful to learn about. The pomegranate deseeder pictured above was one of those weird little patents that I wrote up and successfully prosecuted.

I expect there will be a bunch of decisions from the patent office and the courts. Some will be right, a few wrong, and one or two perhaps embarrassingly so.

We wish our readers a successful year ahead.


Israel Supreme Court Overturns Ruling Concerning Unjust Enrichment

September 16, 2014
Reversed Challa Cover!

Reversed Challa Cover!

Back in January 2012, then Jerusalem District Court Judge Yaakov Shapira issued a permanent injunction against a Merkaz Matanot 2006, a competitor and former client of the plaintiff, Karshi, prohibiting them from importing, exporting or otherwise trading in ceremonial ritual challah cloths that had a similar general design to those that produced and distributed by Karshi. Their client, Ami Motzrei Noi LTD and their owner were also injuncted and they were See here for more details.

Essentially Judge Shapira who is now the State Comptroller ruled that there was Unjust Enrichment, breach of contract and passing off. I was very critical of the decision, and particularly that Shapira gave a world-wide injunction which seemed to have been beyond his judicial competence.

I am pleased to announce that the Israel Supreme Court has now reversed the ruling.

Essentially, Karshi ordered these ritual cloths having the words ‘שבת קודש’ – ‘Holy Shabbat’ in a fairly standard font embroidered on a piece of chiffon with a more solid fabric border from China.

Judge Chayot ruled that since Merkaz HaMatanot labeled their cloths with a tag stating that the supplier was Merkaz HaMatanot, there was no case of passing off. Merkaz HaMatanot was a retail customer of Karshi as wholesaler and not an agent of theirs, there was no contractual relationship and thus no breach of contract.

Karshi made no attempt to register the design and there was no additional consideration to imply that Karshi had rights in the design. There was no case of inequitable behaviour to answer for so there was no grounds for sanctions under the Law of Unjust Enrichment.

Case: Civil Appeal 1898/12 Merkaz Matanot 2006 LTD vs. Karshi Intenrational LTD. before Judges Solberg, Natyot and Chayot.  Hearing 25/6/2013, decision, August 2014.

COMMENTS

It seems that A.Sh.I.R. is still good case-law, but the judges want some real indication beyond competition to rule Unjust Enrichment.

The cloths in question were variations on a well-known theme. It is suprising how many of these are sold. I suspect that a lot of ritual Judaica (probably including mezuzot and tefilin) are made in China. Being an importer does not create a monopoly. The original decision was wrong (as were decisions by Shapira concerning the Hallel wine trademark and concerning alleged copyright infringement by Naomi Ragen. I am pleased he no longer rules on IP issues. Whether or not he will be a good state comptroller is beyond the scope of this blog, and beyond my competence to comment on.

 


Job Vacancy for Trainee Examiners in Israel Patent Office

September 10, 2014

Israel patent office logo

The Israel Patent Office is looking to recruit a couple of trainee examiners. Suitable candidates must have a relevant scientific or engineering degree, must be fluent in Hebrew and must be able to cope with English language technical literature.

Patent experience is useful but not essential.  For more details, see here.


Draft Israel Patent Office Circular on Conditions for Allowing Dispensation from Oral Exam

September 4, 2014

 Oral_Dental_Exam

Background

At present, candidate patent attorneys must have a recognized science or engineering degree, must train for a minimum of two years under a licensed patent attorney who has been licensed for at least three years (in certain circumstances, those licensed abroad may have this period shortened), and the candidate must pass a written exam which is an exercise in patent drafting, and an oral exam.

On 28th August 2014, the Israel Patent Office published a draft circular that details a proposal for allowing candidate patent attorneys who study a Masters in IP Law to obtain a dispensation from the Oral exam.

Comments from the public are solicited, but the window for such submissions, which may or may not be taken into account, is two weeks, i.e. up to 12th September 2014.

I am translating the main interesting bits below. Afterwards, will publish some comments in this forum and invite feedback here. I haven’t decided if I will submit comments formally yet.

The Draft Circular

circumlocation office

Section 143c of the Patent Law 1967 grants the Minister of Justice authority to free categories of candidates from the examination requirements.

Section 135 of the regulations specifies that a candidate may submit evidence of the required knowledge to the Minister of Justice and obtain the dispensation. Regulation 128 specifies the syllabus or perhaps better, the subject matter of the oral exam.

Tsippi Livni

The Minister of Justice, the Right Honourable Ms Tzippy Livni, (who seems to be too busy trying to negotiate a peace settlement with the Palestinians to be able to cope with run-of-the-mill legal issues like licensing patent attorneys), has delegated this authority to the Commissioner of Patents to address this issue on her behalf.

Under this delegation of responsibility, the Israel Commissioner of Patents and Trademarks Asa Kling proposes that candidate patent attorneys that fulfill the following conditions will receive a dispensation from the oral exam:

  • The required knowledge is obtained in a Masters of Law program that focuses on IP Law that is recognized by the Council for Higher Education at a university or recognized college
  • The curriculum includes courses in all subjects on the syllabus defined by Regulation 128
  • The candidate completed the course of studies with the highest distinction (summa cum laude?) and in the top 20% of candidates of that year
  • The candidate was present in at least 80% of lectures

The candidate will have to provide official transcripts and certificates.

None of the above will limit the Commissioner’ discretion from granting dispensations on a case by case basis in exceptional circumstances on an ad hoc basis.

Candidates can still appeal to the Minister of Justice under section 143c.

This circular does not recognize any specific academic institution as fulfilling the required conditions.

COMMENTS

law school

Should obtaining a Masters degree in IP Law be sufficient to obtain a dispensation from sitting the oral theory exam? The IP Community is invited to submit their comments. Here are mine:

I think the reason that this issue is being addressed is that various institutions such as Haifa University offer a Masters Program in IP and, currently, it is a costly program that I have wondered who it attracts? If such course provide dispensation from the notoriously difficult oral exam for Israel Patent Attorneys, they will be more attractive and more students will study them. I suspect that Haifa University and, perhaps places like Tel Aviv and Bar Ilan that offer academic courses that are not degree programs in patents and other IP things and maybe even undergraduate law programs such as ONO that teach an IP Law program, have been lobbying for recognition.

oral exam

The committee of examiners, by Law, should include one patent attorney only. In recent years it typically included two Israel Patent Attorneys and a further Attorney-at-Law, where one of the patent attorneys was also an attorney-at-law. After a scathing critique on this blog, the patent office ruled that where one patent attorney is also a lawyer, this was within the law, but has stopped the practice. It wasn’t within any reasonable interpretation of the Law, but I understand why a retroactive cancellation of all issued licenses or automatic passing of those that failed the Exam was not an acceptable alternative. One also wonders how examiners could test potential candidates on the Law when they were apparently unfamiliar with it. I have also suggested that the oral exams should be scrapped.

The patent exams should be held three times a year. A candidate failing an exam is not supposed to be able to resit within six months and in practice exams are held at intervals of just over six months to prevent candidates from having to wait eight months. Previous Commissioner, Dr Meir Noam, ruled that candidates with less than a year’s training could not sit the exam yet. This was probably a good idea, but was, in my opinion ultra vires, and should have been the decision of the Minister of Justice.  There have been other legal shenanigans including a retroactive amendment of filing fees to take care of a thoroughly sensible but nevertheless ultra-vires initiative of then Commissioner Dr Meir Noam to stop printing hard copies of a journal that no-one read, but to allow publication on the Patent Office website.

I don’t have official statistics, but it seems that more candidates are passing the theory exam now that the committee includes only one patent attorney and two attorneys. This is not a surprise, since in a competitive and shrinking market, there was little incentive for a committee having a majority of its members being patent attorneys, to graduate and qualify more competition. Occasionally things go wrong. I know of cases in recent years where the candidate had previously worked for the examiner. It shouldn’t happen but it has. (The candidate’s comments regarding the services he’d have had to provide to qualify are inappropriate for publication on this blog).

As someone who has many years of academic study behind me (Talmud, Materials Engineering, Physics, Law), I do not dismiss academia as irrelevant. I do not, however, think that an academic theoretical knowledge should compensate for practical experience and knowledge of IP issues. The oral exam is not a theory exam. It is an oral test of practical knowledge. The examiners test that the candidate knows drop-deadlines and knows about designs and trademarks. Examiners often tested that the candidate was aware of the differences between main regimes such as regarding grace-periods, business method patents, software patents, gene patents and stem cell patents.

An IP Law degree, should, in my opinion, train candidates in specific areas such as Internet Law. It should be high level and specific. The IP practitioner’s qualification should be general. It should be detailed but not require the candidate to have formulated opinions or even to be knowledgeable about contentious issues.

Some IP practices do not provide training to trainees. They use them to draft applications, often for a percentage that gets whittled down in practice by the trainer taking his cut first, so that the trainee gets paid nothing. The system is immoral and probably illegal since trainees are considered as salaried employees unable to work elsewhere, but who don’t earn a minimum wage. Many of the practitioners operating the scam do not provide any training whatsoever. Other firms do provide a salary and training. A trainee should get hands on experience of all aspects of IP, not merely do the less profitable work to free the attorney from meeting clients. A big firm can provide a more formal training structure. However, sole-practitioner can train if he or she is willing to involve the trainee in all aspects of his/her practice including contentious issues. Indeed, as a sole practitioner, I did successfully train a couple of now licensed patent attorneys. After every sitting I get emails from new colleague-competitors thanking me for blogging IP decisions and recommending text-books to them.

No individual practitioner’s practice will cover all aspects of IP. The trainee will generally have to study some topics by his/herself. There are a couple of recent textbooks here and here on Israel IP Law, both reviewed on this blog. Reading these, reading the Law and regulations and being aware of court and patent office decisions, perhaps by following this blog, should provide the knowledge to let anyone reasonably intelligent (and most patent attorneys are) pass the theory exam.

I do read books and papers by Israeli IP academics and have met many of them. I do not think that they are really qualified to educate the next generation about what happens in practice. Some are too busy trying to change the system in light of his/her ideas of justice, to be aware of what actually happens. Supreme Court precedents do not necessarily influence examiners at the patent office. A masters’ course is a cash cow for the academic institution. The customers expect to pass with good grades and their expectations are often fulfilled.

oral exam 2

Someone competent should not need dispensation from the exam because he/she will be able to pass it.

Perhaps the current theory exam which is an oral viva could be modified and partially replaced by a written short answer paper, possibly multiple choice? Such an approach would at least standardize the requirements.

I believe that the US requirement of on-going training is also something worth considering. I am not sure how many licensed and practicing patent attorneys would pass the theory exam if they were to sit it again.

asa kling

Commissioner’s Kling’s proposal lists various requirements and does not automatically grant any successful graduate of a masters program in IP Law with a dispensation. It limits it to a percentage of the students. This means that the standard is subjective and not objective.  It is designed to keep numbers down. I don’t think doctors, accountants or attorneys at law get dispensation from professional qualifying exams by virtue of a having a degree. I think a Master’s program should be academic and not vocational. Qualifying to advise and provide services to the public requires practical knowledge.

jeremy phillips  Some years back, Professor Jeremy Phillips successfully negotiated with the UK Institute of Patent Attorneys that the Queen Mary Institute of Intellectual Property Law’s Masters’ program provide a professional qualification. He correctly points out that many competent practitioners don’t know how to teach. There are, however, some substantive differences between the UK Institute membership and the Israel Qualification in that anyone can write and prosecute patents in the UK, whereas in Israel one has to be a licensed Attorney-at law or a Patent Attorney.

Many years ago, Howard Poliner, who now works for the Ministry of Justice drafting IP Laws and amendments, used to offer a course to trainee patent attorneys. It did not replace the Exam but provided preparation for it. I think this is a useful service that universities should offer. Indeed, I thought about teaching such a program myself.

The exact scope of what patent attorneys can and cannot legally do in Israel is a contentious issue between patent attorneys and attorneys-at-law. Licensed patent attorneys interpret the relevant law (sections 19 and 20 of the Israel Bar Act and section 154 of the Israel Patent Law) somewhat wider than do various patent searchers, patent portfolio managers and others. See here for more information.

Dr NoamAlthough I am concerned that the profession should be open to anyone with an appropriate competence and not to a limited number of new practitioners each year, I am rather horrified that the Association of Israel Patent Attorneys has not seen fit to hold an extraordinary general meeting about an issue that is clearly of extraordinary relevance to the membership. I suspect the fact that the chairperson, Dr Meir Noam is actually not a practitioner in private practice and hasn’t been for over a decade including a period that he was the Commissioner, may have something to do with the lack of urgency he is showing to this issue. Of course, the Association Israel Patent Attorneys could be working on an official position paper that they intend submitting without coordinating with the membership, but I don’t suppose they would be so sneaky, would they?

Talking of being sneaky, sneaking out this draft circular at the end of August, with AIPPI conference in a couple of weeks and the High Holidays coming up is a good way to ensure that there isn’t significant discussion and debate on the issue. I have no doubt that the universities have been lobbying this for a while.

Hopefully, having shot off criticism in all directions, some readers may see fit to respond and we can have an open debate on the topic. All comments that are to the point and reasonably polite will be published.


Invitation to the PCTea Party!

September 4, 2014

PC TeabagssewProfessor Phillips at a PCTea Party at the British Houses of Parliamentcinema city

To celebrate 10 years as an owner or partner in my own firm (including the partnership JMB, Factor & Co. circ a 2008-2011), and, a decade of this blog, the readers of IP Factor are cordially invited to toast in the Jewish New Year at a PCTea Party to be held in Cinema City Glilot, Ramat HaSharon. In addition to food, there will be food for thought provided by the preeminent Professor Jeremy Phillips, who will provide some insights on recent world-wide IP Developments, taking his title from Kohelet (Ecclesiastes):

“A time to sow and a time to reap”.

The event will be a party, not a sales pitch. We won’t be giving out literature (and request that competitors don’t either). I won’t even blow my own trombone.

When? 4 PM – 6 PM on October 1, 2014,

Where? Cinema City, Glilot

Academics and associates, competitors, colleagues, commissioners and clients, friends and family, lawyers and litigators, examiners and judges are all welcome.  However, we do need an idea of numbers, both for refreshment quantities and so that we select the appropriate cinema theatre (movie theater for those requiring translation), so we do request that people register here.


Israel Patent Office on Facebook

August 28, 2014

like

The Israel Patent Office has an official page on Facebook.

I had a little visit or (is it called surfing?). There is a cute list of IP conventions and pictures of the relevant cities: Budapest, Rome, Madrid, etc. I appreciate the irreverence and this is the sort of thing that I do on my blog.  However, it seems a little odd watching the official Patent Office doing it though. The former head of the USPTO had a blog and the UK have one called IP Facto (the name seems a rip-off of this one).  The Facebook page has a five-star rating from the half-dozen people (none of whom I’ve heard of) who rated it.

Those that liked the Israel Patent Office page (221 so far and counting) also liked the Administrator General and Official Receiver page.

I am one of those Luddites that keeps forgetting his passwords for linked-in and Facebook so I don’t expect that I will be very active monitoring this node on the social network.

I was in Rome last week with the family. (We stayed in an appartment on the Piazza a fungi. We went on to Naples which was a bit of an anti-pasti, and is covered with graffiti). Now apparently Rome wasn’t built in a day, and there are lots of half-finished structures, one of which, the coliseum, was apparently built with funds from the sacking of Judea. Knocking down a Temple to God and using the spoils to build a sports stadium for killing gladiators and rare animals seems a strange set of priorities. Back then, the crowds could have gladiators dispatched by thumbs up or thumbs down. Now you can join the excitement and like or dislike the Official Patent Office website. What fun!


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